Patent and Trade Mark Attorney Services

The new New Zealand Patents Act (the 2013 Act) will come into full force this Saturday! After over 60 years, the 1953 Patents Act will be superseded, although its ghost will continue to linger for some time under the transitional provisions.

If you haven’t already, file your NZ patent application right now so that it will be examined under the more lenient 1953 Patents Act!

If you haven’t already, consider paying all of the renewal fees for your granted NZ patent right now!

The official fees payable to the Intellectual Property Office of New Zealand (IPONZ) will be slightly different under the 2013 Act.The differences between the most commonly paid official fees pre- and post-Saturday are set out below (in $NZ).

Filing a complete application: $250 (was $250)

Filing a Convention/PCT application: $250 (was $250)

Requesting examination: $500 (new fee)

Amending the specification: $150 (only if outside of examination, was $60)

A significant change in practice is that renewal fees under the 2013 Act will be due annually from the 4th anniversary of the filing date, and will also be payable for patent applications proceeding under the 2013 Act.The renewal fees are NZ$100 for the 4th to 9th anniversaries, NZ$200 for the 10th to 14th anniversaries and NZ$350 for the 15th to 19th anniversaries.

What were you doing at 7:30am this morning? I was delivering a presentation entitled "Drafting of Patent Specifications Post-Raising the Bar" to 30 or so patent attorneys at the Legalwise "Patents and Trade Marks 10 Points in One Day 2014" Seminar!

After researching this presentation, I strongly recommend that any patent attorneys who regularly draft patent specifications in Australia spend some time familiarising themselves with the UK and European laws regarding sufficiency and support. I was surprised at how far Australia's laws had diverged from those in the UK and Europe.

It has now been a year since the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came fully into force in Australia.I well recall this day last year, and the sense of relief that one of the busiest periods ever for Australian patent attorneys (certainly in my career) was finally over!

I thought it may be worth reflecting on how patent practice in Australia has changed over the past year, but this will be a relatively brief blog because, in short, we still haven’t really felt the effect of the new laws!

As predicted, IP Australia was inundated with new filings and requests for examination pre-15 April 2013 (so that the old laws would apply to those patent applications).IP Australia have, however, recently indicated that they are getting on top of things and will shortly re-commence directing applicants of pending patent applications to request examination (under the new laws).We should therefore start to see more Examiner’s reports applying the new laws in the next six or so months.

I have personally only seen one Examiner’s report issued under the new laws, and was quite surprised by the rigour with which the case had been examined.The Examiner was certainly not afraid to raise objections under the new Section 40 grounds of sufficiency and support.

Interestingly, at some stage after the new laws came fully into force, and with very little (any?) fanfare, the “case management” of divisional patent applications (where examination of divisional applications was forcibly expedited) was suspended by IP Australia.It will be interesting to see if this case management is reinstated after IP Australia’s workload comes back to more normal levels.

By all accounts, the new provisions intended to speed up oppositions have also been rigorously applied by IP Australia, although some extensions of time have been allowed.

Finally, there have also been a smattering of Court cases considering aspects of the new laws.Happily, the Federal Court has confirmed that patent attorneys now enjoy the same privilege as lawyers (although we are still not entirely certain whether or not this “new privilege” extends to documents prepared pre-15 April 2013).